Kerala High Court
Pas Agro Foods, Represented By Its ... vs Krbl Limited, Represented By Its ... on 27 October, 2025
I.A No.2/2025 & SPJC 2/2025
1
2025:KER:79840
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE M.A.ABDUL HAKHIM
MONDAY, THE 27TH DAY OF OCTOBER 2025 / 5TH KARTHIKA, 1947
SP.JC NO. 2 OF 2025
PETITIONERS:
PAS AGRO FOODS, REPRESENTED BY ITS MANAGING PARTNER
SRI. ASHARAF K.V.
AGED 55 YEARS
7/755, MELE ARIYOR, KOTTOPADAM, MANNARKKAD, PALAKKAD-678583,
KERALA, INDIA
BY ADV SMT.M.UMA DEVI
RESPONDENTS:
1 KRBL LIMITED, REPRESENTED BY ITS MANAGING DIRECTOR
5190, LAHORI GATE, DELHI-110006
2 CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS
(CGPDTM) IN INDIA
BHOUDHIK SAMPADA BHAVAN, FIRST FLOOR, S. M. ROAD, ANTOP
HILL, MUMBAI-400037
3 DEPUTY REGISTRAR OF COPYRIGHTS
COPYRIGHT OFFICE DEPARTMENT FOR PROMOTION OF INDUSTRY AND
INTERNAL TRADE MINISTRY OF COMMERCE AND INDUSTRY BOUDHIK
SAMPADA BHAWAN, PLOT NO. 32, SECTOR 14, DWARKA,
NEW DELHI-110078
BY ADVS.
SHRI.PRAVEEN K. JOY
SRI.R.MURALEEKRISHNAN (MALAKKARA)
SRI.T.ANUP JOACHIM
SRI.M.J.XAVIER THOMAS
SRI.N.ABHILASH
SHRI.ALBIN VARGHESE
I.A No.2/2025 & SPJC 2/2025
2
2025:KER:79840
SRI.M.P.UNNIKRISHNAN
SRI.E.S.SANEEJ
SMT.ABISHA.E.R
SMT.MEGHA G.
SMT.FATHIMA SHALU S.
THIS SPECIAL JURISDICTION CASES HAVING BEEN FINALLY HEARD ON
27.10.2025, THE COURT ON THE SAME DAY DELIVERED THE FOLLOWING:
I.A No.2/2025 & SPJC 2/2025
3
2025:KER:79840
CR
JUDGMENT
Dated this the 27th October 2025 I.A.No.2/2025
1. This Special Jurisdiction Case is filed under Section 57 read with Sections 124 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act') and Section 50 of the Copyright Act, 1957, by a firm formed and having business operations in Kerala to cancel the trade mark registration 'INDIA GATE' owned by the Respondent No.1, a limited company incorporated in New Delhi. The Respondent No.1 acquired the statutory rights of the trade mark 'INDIA GATE' through a Deed of Assignment dated 06.08.2019, assigned by one Mr. Ram Pratap, who obtained the trade mark registration for 'INDIA GATE' from the Trade Marks Registry, New Delhi, on 18.06.1993.
I.A No.2/2025 & SPJC 2/20254
2025:KER:79840
2. The Respondent No.1 challenged the maintainability of the case by filing I.A. No.2 of 2025, and accordingly, the maintainability of the case was heard by me as a preliminary issue.
3. The Respondent No.1 raised two grounds in support of its challenge against the maintainability of the case:-
I. Lack of territorial jurisdiction.
II. The case is premature.
4. I heard the learned Counsel for Petitioner, Smt. Uma Devi M., and the learned Counsel for the Respondent No.1, Sri. Praveen K. Joy with Sri. Shravan Kumar Bansal on the maintainability issue.
5. I may narrate brief facts of the case for better understanding of the contentions of the parties: The Respondent No.1 filed C.S.(Comm) No.78/2025 under Section 134 of the Act against the petitioner and another for infringement of registered trade mark before the District Court (Commercial) at Tis Hazari Courts (Central), New Delhi, on 14.01.2025. The District Court, as per the Order dated 21.01.2025, I.A No.2/2025 & SPJC 2/2025 5 2025:KER:79840 granted temporary injunction against the use of the trade mark by the defendants therein and appointed an Advocate Commissioner to take into custody the infringing goods and other incriminating materials like stationery, packing materials, etc., with police assistance. The Advocate Commissioner visited the business premises of the Petitioner with police assistance on 27.01.2025 and took into custody all the materials connected with the name 'INDIA GATE' from there. The Petitioner filed this Case on 07.02.2025. Thereafter, the Petitioner filed an Application in C.S.(Comm) No.78/2025 seeking stay of the said suit pending final disposal of this case in this Court, and the said Application is pending consideration before the District Court, New Delhi.
6. Let me consider the grounds raised by the Respondent No.1 in support of its challenge against the maintainability of the case. I.A No.2/2025 & SPJC 2/2025 6
2025:KER:79840 I. LACK OF TERRITORIAL JURISDICTION:
7. The contention of the learned Counsel for the Respondent No.1 is that the Rectification Petition under Section 57 of the Act is to be filed before the High Court, which is exercising appellate jurisdiction over the Trade Marks Registry where the trade mark was originally registered. Since the registration of the trade mark 'INDIA GATE' of the Respondent No.1 is granted by the Trade Marks Registry, New Delhi, the Delhi High Court alone has the jurisdiction to entertain the Petition for rectification or cancellation of the registered trade mark. The Learned Counsel relied on the decision of the Delhi High Court in The Hershey Company v. Dilip Kumar Bacha [MANU/DE/0904/2024] and the decision of the Madras High Court in M/s. Woltop India Pvt. Ltd. v. Union of India and Others [W.P.(IPD) Nos.30 & 32 of 2024] in support of his contention.
8. The contention of the learned Counsel for the Petitioner is that a Rectification Petition under Section 57 of the Act can be filed in this I.A No.2/2025 & SPJC 2/2025 7 2025:KER:79840 Court, as part of the cause of action has arisen within the jurisdiction of this Court. The Petitioner is prevented from doing its legal business within the jurisdiction of this Court on account of the registration of the trade mark in favour of the Respondent No.1. The goods belonging to the Petitioner were seized by the Advocate Commissioner from the business premises of the Petitioner within the jurisdiction of this Court. Section 57 of the Act refers only to the High Court and does not specify the High Court which is exercising appellate jurisdiction. Hence, the Petitioner has every right to maintain the Petition for Rectification in this Court. The Learned Counsel relied on the decision of the Delhi High Court in Dr. Reddys Laboratories Ltd. v. Fast Cure Pharma and Another [C.O. (Comm.IPD-TM) 8/2023] in support of her contention.
9. Under Section 20 of the Code of Civil Procedure, 1908, a suit is to be filed in the Court at the place of the defendant or where part of the cause of action wholly or in part arises. Section 134(2) of the I.A No.2/2025 & SPJC 2/2025 8 2025:KER:79840 Act is an exception to this general rule. It permits the plaintiff to institute the infringement suit at his place. Sections 47 and 57 of the Act provide for the filing of a Rectification Petition to the High Court or the Registrar. Section 91 of the Act provides for an appeal from the order of the Registrar to the High Court. Originally jurisdiction of the High Court was with the Appellate Board formed under Section 83 of the Act, which was known as the 'Intellectual Property Appellate Board (IPAB)'. By the Tribunals Reforms Act, 2021, the IPAB was substituted with the High Court. Section 125 of the Act provides that where the defendant questions the validity of the registration of the plaintiff's trade mark in suit for infringement of trade mark, the Application for Rectification has to be made to the High Court and not the Registrar. Under Section 124(1)(ii) of the Act, if no Rectification proceedings are pending when a suit for infringement is instituted and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or I.A No.2/2025 & SPJC 2/2025 9 2025:KER:79840 defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. Thus, the High Court is the proper forum to file an Application for rectification when a suit for infringement is pending. The question is which High Court is having jurisdiction to entertain the Rectification Petition. Is it only the High Court having territorial jurisdiction over the office of the Trade Marks Registry where the trade mark was registered?
10. In Dr. Reddys Laboratories Ltd. (supra), the Delhi High Court considered the question whether a Rectification Petition under Sections 47 or 57 of the Act would lie only before the High Court having territorial jurisdiction over the office of the Trade Marks Registry where the impugned mark was registered, or could it be filed in another High Court. Following the Full Bench decision in I.A No.2/2025 & SPJC 2/2025 10 2025:KER:79840 Girdhari Lal Gupta v. M/s. K. Gian Chand Jain & Co. [AIR 1978 Del 146] rendered under the Designs Act, 1911, the Delhi High Court held that applications under Section 47 or Section 57 of the Trade Marks Act, 1999, as also under Section 124(1)(ii), would be maintainable not only before the High Court within whose jurisdiction the offices of the Trade Marks Registry which granted the impugned registrations are situated, but also before the High Courts within whose jurisdiction the dynamic effect of the impugned registration is felt by the applicant.
11. In a subsequent decision in The Hershey Company (supra), another learned Single Judge of the Delhi High Court doubted the correctness of the decision in Dr. Reddys Laboratories Ltd. (supra) and placed the matter before the Chief Justice for the constitution of a larger bench, raising the following questions.
i) Whether the decision of the ld. Full Bench in Girdhari Lal Gupta (supra), rendered under the Designs Act, 1911, would be I.A No.2/2025 & SPJC 2/2025 11 2025:KER:79840 applicable in the context of the Trade Marks Act, 1999, as amended by the Tribunals Reforms Act, 2021, for determining jurisdiction of a High Court under Section 57 of the 1999 Act?
ii) Whether the jurisdiction of the High Court under Section 57 of the 1999 Act would be determined on the basis of the Appropriate office of the Trade Marks Registry, which granted the impugned trade mark registration?
iii) Whether the expression 'the High Court' can be differently construed in Sections 47, 57 and 91 of the 1999 Act?
12. In Nippon Paint Holdings Co. Ltd. and Another v. Suraj Sharma [A.No.556 of 2024 in C.S.(Comm.Div) No.7 of 2024], the Madras High Court considered the question whether it is having the territorial jurisdiction to transfer to itself by way of consolidation the Rectification Petition filed by the applicants/plaintiffs under Section 57 of the Trade Marks Act, pending before the Trade Marks Registry at New Delhi, since the Infringement Suit is pending I.A No.2/2025 & SPJC 2/2025 12 2025:KER:79840 before it. The Madras High Court considered the decisions of the Delhi High Court in Dr. Reddys Laboratories Ltd. & The Hershey Company (supra). The Madras High Court allowed the Application seeking for transfer of the rectification proceedings from the file of the Trade Marks Registry, New Delhi to it. The following two findings of the Madras High Court are relevant in this case.
"c) The forum conveniens for deciding the rectification application seeking for rectification of the registered trademark of the defendants is only before this Court, as only through a consolidated hearing of the infringement suit and the rectification application, an effective adjudication of the dispute can be rendered as the forum conveniens is only the Madras High Court;
d) The dynamic effect of registration of the identical trademark at New Delhi has an effect at Chennai within the jurisdiction of this Court, where the plaintiffs categorically pleaded that the infringed products are advertised and sold by the defendants. Hence, this I.A No.2/2025 & SPJC 2/2025 13 2025:KER:79840 Court by applying the 'dynamic effect' principle is empowered to transfer the rectification proceeding pending on the file of the Trademarks Registry, New Delhi to the file of this Court;"
13. The order in Nippon Paint Holdings Co. Ltd. (supra) is stayed by the Hon'ble Supreme Court in the Order dated 10.05.2024 in Special Leave to Appeal (C) No.10454 of 2024.
14. Another learned Single Judge of the Madras High Court dismissed a Writ Petition seeking transfer of Rectification petitions from Ahmedabad Trade Marks Registry to it in M/s. Woltop India Pvt. Ltd. (supra). The Madras High Court held that in Sections 47, 57, 91, 124 and 125 of the Act, the definite article "the" qualifies the words "High Court"; that the use of the definite article "the" both in Sections 47 & 57 underscores Parliament's intention to confer such jurisdiction on a particular High Court; that in Section 2(1)(s), the Trade Marks Act defines the expression "prescribed means" "in relation to proceedings before a High Court prescribed by Rules I.A No.2/2025 & SPJC 2/2025 14 2025:KER:79840 made by the High Court; that it is clear that the indefinite article 'a' is used in the TM Act when the reference is generic, i.e. not to a particular High Court, whereas the definite article "the" is used when Parliament intends to refer to a particular High Court; that the identity of the particular High Court vested with inter alia the power of rectification or appellate power would vary depending upon the location of the office of the Trade Marks Registry, which made the entry or decision relating to the relevant trademark; and that since the offices of the Trade Marks Registries are currently located in Mumbai, New Delhi, Calcutta, Chennai, and Ahmedabad, it could be the High Court exercising appellate jurisdiction over each of these offices. It is further held that when Sections 47 and 57 are read with Rule 4 of the Trade Marks Rules, 2017, it is beyond doubt that an application for rectification either under Sections 47 or 57 would only lie before the office of the Trade Marks Registry within whose territorial limits the principal place of business, as entered I.A No.2/2025 & SPJC 2/2025 15 2025:KER:79840 in the register, of the registered proprietor is situated; that Rule 4 also points in the same direction as regards the particular Registrar of Trade Marks; that any other interpretation, whether on the basis of the dynamic effect of the registration or otherwise, would result in jurisdictional chaos because "any person aggrieved" is entitled to petition to rectify the register; that if it were to be concluded that such petitions may be filed before any High Court, multiple rectification petitions to rectify a particular entry of registration of a trade mark could be filed by different aggrieved persons before different High Courts leading to the possibility of conflicting decisions and great uncertainty. The Madras High Court concluded that the power of rectification is exercisable only by the High Court exercising appellate jurisdiction over the appropriate office of the Trade Marks Registry, wherein the entry relating to the impugned mark was made.
I.A No.2/2025 & SPJC 2/202516
2025:KER:79840
15. I am in respectful agreement with the aforesaid view taken by the learned Single Judge of the Madras High Court in M/s Woltop India Pvt. Ltd. (supra). As rightly held, any other interpretation would invite the filing of multiple Rectification Petitions with respect to the same trade mark before several High Courts, and there is every chance of different High Courts passing conflicting orders. If Rectification Petitions are filed by the different defendants as enabled by the Court under Section 124(1)(ii) of the Act before different High Courts, the Court dealing with the infringement suit will have to wait for the decisions of different High Courts staying the proceedings in the suit. If different High Courts pass conflicting orders, the situation will become worse. Rule 4 of the Trade Mark Rules, 2017, provides that the appropriate office of the Trade Marks Registry for Rectification Petition is the Trade Marks Registry within whose territorial limits the principal place of the registered proprietor is situated. Rule 5 provides that the jurisdiction of the appropriate I.A No.2/2025 & SPJC 2/2025 17 2025:KER:79840 office of the Trade Marks Registry will not be altered by the change of principal place of business of the proprietor. The scheme of the Act is to consolidate all the Rectification Petitions in one Forum, whether it be the Registrar or the High Court. The conferment of jurisdiction on a High Court on the basis of the 'dynamic effect' of registration within its jurisdiction is against the scheme of the Act, and it would lead to utter chaos in the matter of adjudication. It is the High Court that exercises appellate jurisdiction over the Trade Marks Registry where the trade mark is registered, alone is having jurisdiction to entertain the Rectification Petitions with respect to such trade mark under Sections 47 of 57 of the Act.
16. In the case on hand, since the subject trade mark is registered at the Delhi Trade Marks Registry, the Delhi High Court alone is having jurisdiction to entertain the Rectification Petition. Consequently, I hold that the above Special Jurisdiction Case is not maintainable in this Court for want of jurisdiction. I.A No.2/2025 & SPJC 2/2025 18
2025:KER:79840 II. THE CASE IS PREMATURE:
17. The learned Counsel for the Respondent No.1 contended that the present Case is premature for want of framing issue regarding invalidity of registration of trade mark by the District Court, New Delhi, in C.S.(Comm) No.78/2025 under Section 124(1)(ii) of the Act, after satisfying that the plea regarding the invalidity of the registration of the trade mark is prima facie tenable. Learned Counsel relied on the decision of the Hon'ble Supreme Court in Patel Field Marshal Agencies and Another v. P. M. Diesels Ltd. and Others [(2018) 2 SCC 112], the decision of the Delhi High Court in Steelcase Inc. v. Mr. K.J. Bhuta and Another [C.S.(Comm) 1180 of 2018] and the decision of the Madras High Court in M/s. Anugraha Castings v. Anugraha Valve Castings Ltd. [C.R.P. No.2480 of 2025] in support of his contention.
18. It is quite apposite to extract Section 124 of the Act for easy reference.
I.A No.2/2025 & SPJC 2/202519
2025:KER:79840 "124. Stay of Proceedings where the validity of registration of the trade mark is questioned, etc.--
(1) Where in any suit for infringement of a trade mark--
(a) The defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) The defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the High Court, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the I.A No.2/2025 & SPJC 2/2025 20 2025:KER:79840 plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
I.A No.2/2025 & SPJC 2/202521
2025:KER:79840 (4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit."
19. Section 124 of the Act deals with two situations with reference to an infringement suit. The first situation is the pendency of the Rectification Petition at the time of institution of the suit. In such a situation, Section 124(1)(i) mandates that the suit shall be stayed pending final disposal of the Rectification proceedings. The second situation is that no Rectification Petition is pending at the time of I.A No.2/2025 & SPJC 2/2025 22 2025:KER:79840 institution of the suit. In such a situation, the party to the suit cannot file a Rectification without following the procedure prescribed under Section 124(1)(ii) of the Act. The procedure is that the party having a grievance against the registration of trade mark must raise a plea regarding the invalidity of the registration. He has to satisfy the Court that the plea is prima facie tenable. If the Court is satisfied that the plea is prima facie tenable, the Court has to raise an issue regarding the same and adjourn the case for a period of three months to enable the party to file Rectification Petition in the High Court. If the Party proves that he has made the Rectification Petition within the said three months or within such extended time, the trial of the suit shall stand stayed until final disposal of the rectification proceedings. If the party does not file the Rectification Petition within the said three months or within such extended time, the issue as to the validity of the registration is deemed to have been abandoned, and the court shall proceed with the suit I.A No.2/2025 & SPJC 2/2025 23 2025:KER:79840 regarding the other issues in the suit. This provision would indicate that if a party does not raise a plea regarding the invalidity of the registration of the trade mark in the infringement suit, it has to be treated as if he has no grievance against the registration of the trade mark. If the court is not prima facie satisfied with the plea regarding invalidity and does not raise an issue, the party aggrieved has to challenge the same before the Appellate Court of the court dealing with the infringement suit. If the parties are allowed to institute Rectification proceedings without any prima facie satisfaction as to the tenability of the challenge, it is easy to get the infringement suit stayed by the casual institution of Rectification proceedings.
20. In Patel Field Marshal Agencies (supra), the Hon'ble Supreme Court was considering the scope of Section 111 of the old Trade and Merchandise Marks Act, 1958, corresponding to Section 124 of the Act. Sections 46, 56 and 107 of the old Trade and Merchandise I.A No.2/2025 & SPJC 2/2025 24 2025:KER:79840 Marks Act, 1958, correspond to Sections 47, 57 and 125, respectively, of the Act. In the said case, while the infringement suit was pending before the Delhi High Court, the defendants therein initiated three parallel Rectification proceedings before the Gujarat High Court. The learned Single Judge of the Gujarat High Court dismissed the Rectification Petitions and the same was confirmed by the Division Bench. The order of the Division Bench of the Gujarat High Court was challenged before the Hon'ble Supreme Court. The Hon'ble Supreme Court dismissed the Special Leave Petitions. The Hon'ble Supreme Court formulated the following question for consideration.
"In a situation where a suit for infringement is pending wherein the issue of validity of the registration of the trade mark in question has been raised either by the plaintiff or the defendant and no issue on the said question of validity has been framed in the suit or if framed has not been pursued by the party concerned in the suit by filing an I.A No.2/2025 & SPJC 2/2025 25 2025:KER:79840 application to the High Court for rectification under Section 111 read with Section 107 of the Trade and Merchandise Marks Act, 1958, whether recourse to the remedy of rectification under S.46/56 of the 1958 Act would still be available to contest the validity of the registration of the Trade mark?"
21. The Hon'ble Supreme Court made certain categorical findings which are squarely applicable to the subject issue involved in this case. The findings of the Hon'ble Supreme Court relevant to the case on hand are stated here: From the resume of the provisions of the 1958 Act, it becomes clear that all questions with regard to the validity of a trade mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, in fact, is not empowered by the Act to decide the said question. The Act mandates that the decisions rendered by the prescribed statutory authority [Registrar / High Court] will bind the I.A No.2/2025 & SPJC 2/2025 26 2025:KER:79840 Civil Court. The Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. In a situation where a suit is pending, the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity. Conversely, in a situation where the Civil Court does not find a triable issue on the plea of invalidity, the remedy of an aggrieved party would not be to move under Sections 46/56 of the 1958 Act but to challenge the order of the Civil Court in appeal. This would be necessary to avoid multiple proceedings on the same issue and resultant conflict of decisions. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil I.A No.2/2025 & SPJC 2/2025 27 2025:KER:79840 court. In cases where the parties have not approached the civil court, Section 46 and Section 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark, such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Section 111 of the 1958 Act, and the corresponding Section 124 of the 1999 Act, nowhere contemplate the grant of permission by the civil court to move the High Court or the IPAB, as may be, for rectification. The requirement of satisfaction of the civil Court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in the statutory authority to deal with the issue of invalidity by no means, tantamount to I.A No.2/2025 & SPJC 2/2025 28 2025:KER:79840 permission or leave of the civil court, as has been contended. It is a basic requirement to further the cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit.
22. In view of the aforementioned binding propositions of law laid down by the Hon'ble Supreme Court, I find it unnecessary to consider the decision of the Delhi High Court in Steelcase Inc. (supra) and the decision of the Madras High Court in M/s. Anugraha Castings (supra) cited by the learned Counsel for the Respondent No.1.
23. The law is clear on the point. The Petitioner cannot file the above Special Jurisdiction Case under Section 57 of the Act seeking cancellation of the trade mark registration granted to the Respondent No.1 without framing an issue regarding the invalidity of the registration in C.S.(Comm) No.78/2025 pending before the District Court, New Delhi, after satisfying the Court of the prima I.A No.2/2025 & SPJC 2/2025 29 2025:KER:79840 facie tenability of the plea regarding the validity of the registration of the trade mark.
CONCLUSION
24. In view of the findings under the aforesaid two grounds raised by the Respondent No.1, I hold that the above Special Jurisdiction Case is not maintainable. I.A. No.2/2025 is allowed accordingly. SP.JC.No. 2/2025 This Special Jurisdiction Case is dismissed as not maintainable.
Sd/-
M.A.ABDUL HAKHIM JUDGE jma I.A No.2/2025 & SPJC 2/2025 30 2025:KER:79840 APPENDIX OF SP.JC 2/2025 PETITIONER ANNEXURES Annexure 1 THE DETAILS OF THE PETITIONER COMPANY AS CAN BE DISCERNED FROM INDIA MART AN Annexure 2 TRUE COPY OF THE TRADEMARK REGISTRATION CERTIFICATE DATED 12TH AUGUST, 2019 Annexure 3 TRUE COPY OF THE COPYRIGHT REGISTRATION UNDER REGISTRATION NUMBER A-75495/2006 Annexure 4 TRUE COPY OF THE TRADEMARK APPLICATION OF THE PREDECESSOR OF THE 1ST RESPONDENT Annexure 4 (a) TRUE COPY OF THE APPLICATION OF AMENDMENT OF TRADEMARK FILD BY THE PREDECESSOR OF THE 1ST RESPONDENT Annexure 5 TRUE COPY OF THE EXAMINATION REPORT DATED 21-12- 1998 Annexure 6 UNDERTAKING DATED 30-5-2001 SUBMITTED BY THE RESPONDENT RESPONDENT ANNEXURES Annexure R1(a) TRUE COPY OF PLAINT IN CS COMMERCIAL NO.78 OF 2025 DATED 14.01.2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI Annexure R1(b) TRUE COPY OF ORDER DATED 21.01.2025 IN CS COMMERCIAL NO.78 OF 2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI Annexure R1(c) TRUE COPY OF THE APPLICATION UNDER SECTION 124 IN CS COMMERCIAL NO.78 OF 2025 BEFORE COURT OF DISTRICT JUDGE, TIS HAZARI COURTS, NEW DELHI DATED 13.02.2025 Annexure R1(d) TRUE COPY OF THE JUDGMENT IN PATEL FIELD MARSHAL AGENCIES V. P.M. DIESEL LTD., 2018 (73) PTC 15 (SC) DATED 29.11.2017 OF APEX COURT Annexure R1(e) TRUE COPY OF THE JUDGMENT OF HON'BLE DELHI HIGH COURT IN RESILIENT INNOVATIONS PVT. LTD. V. PHONE PE PVT. LTD., (2023:DHC:3426-DB) DATED 18.05.2023 Annexure R1(f) TRUE COPY OF THE JUDGMENT IN LAKHA RAM SHARMA VS.
BALAR MARKETING PVT. LTD. {97 (2002) DLT 342} DATED 10.10.2001